Lewis v Client Connection Ltd.

For trade mark infringement, aural identity is assessed strictly, but minor differences may be disregarded where they would go unnoticed by the average consumer. Likelihood of confusion is assessed globally, having regard to all relevant circumstances and the imperfect recollection of the average consumer. A mark with acquired distinctiveness and market recognition may enjoy broader protection, even where its words are partly descriptive. Under CPR Part 24, summary judgment is appropriate where the defence has no real prospect of success and a trial would serve only to explore speculation. Similar use in unsolicited telephone calls may establish confusion and, where reputation is shown, a link and unfair advantage under section 10(3) of the Trade Marks Act 1994.

The claimant owned registered trade marks for “Money Saving Expert” and operated a well-known financial advice website. The defendant operated a telephone-based claims management business under the name “Money Claiming Experts”. The claimant alleged infringement under sections 10(1), 10(2) and 10(3) of the Trade Marks Act 1994.

The claimant sought summary judgment. The defendant sought to amend its defence and introduce a counterclaim challenging the validity of the registrations. The central issues were whether the defendant’s use was identical or similar, whether there was a likelihood of confusion, whether the marks were validly registered, and whether the proposed defence raised a real prospect of success.

1. Summary judgment. The court granted summary judgment for the claimant under section 10(2) of the Trade Marks Act 1994. The proposed amendments and counterclaim did not raise a real prospect of successfully defending the claim.
2. Under section 10(1), identity is construed strictly. Applying LTJ Diffusion [2003] ETMR 83, the comparison required consideration of whether the signs were aurally identical. The recordings gave the defendant a real prospect of disputing identity, and the services were not clearly identical.
3. Under section 10(2), the average consumer is reasonably well informed, observant and circumspect, but relies on an imperfect recollection. Likelihood of confusion must be assessed globally, taking account of all relevant circumstances, as explained in Lloyd Schuhfabrik [1999] ETMR 690 and Reed Executive v Reed Business Information Ltd [2004] RPC 40. The evidence of contemporaneous complaints, emails and recordings established a likelihood of confusion. Actual confusion was unnecessary.
4. Although “Money Saving Expert” was partly descriptive, its extensive use had given it a high level of distinctiveness. That distinctiveness, together with market recognition, justified broader protection. The defendant’s proposed plea concerning the acts of Cellcom might assist on section 10(1), but could not answer a section 10(2) claim based on CCL’s own similar name and the resulting likelihood of confusion.
5. The validity challenge had no real prospect of success. Under sections 3(1)(b) and 3(1)(c), the registrations had properly proceeded on the basis of acquired distinctiveness. The evidence supported that conclusion. In any event, the marks would have been saved under section 47 by post-registration acquired distinctiveness.
6. Obiter. Had section 10(2) not disposed of the matter, the claimant would also have succeeded under section 10(3). The marks had a reputation and distinctive character; the defendant’s similar name created the necessary link, took unfair advantage of the marks’ reputation and prestige, and risked tarnishment.